Our answer to the DII-part of D 2015
Our answer to the DI-part will be made available in a separate post"Our answer to the DI-part of D 2015".
First impressions to the paper are given in another thread "D2015: First impressions?".
Copies of the paper: English, French and German versions from EQE Compendium.
All blogs allow anyone to add comments and already have a lot of valuable, interesting and sometimes surprising discussions between many candidates who posted their comments as well as tutors resulted from those.
Any remarks, (different) opinions and questions about our answer are welcome! Please post your contribution as comments to this blog, so everybody can participate in and benefit from the discussion/ explanation.
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 27-02-2015 23:49"), whereas using your real name or alternatively a pseudonym (nick-name) is more personal, more interesting and makes a more attractive conversation.
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Be reminded that the task in DII is to advise the client how to build and use a patent portfolio to support his business and to advise the client how to deal with third party’s rights that may prevent him from doing his business. It is thus not sufficient to only use legal patent terms (prosecute, infringe, within scope): you need use real life words that a real life client can understand (you will have protection for R, so you can stop your competitor from making/selling/using/importing ... in FR; your competitor has protection for S, so you can be stopped from producing ... in CZ). In DII you have to -and can- fully concentrate on giving an adequate advice without being disturbed by looking up and citing legal basis.
Where we give legal basis, this is for information only - legal basis is not required in the DII-part.
Click "Read more" to read our answer,
Roel, Pete, Jelle
We expect our answer to score in a range of 40-50 marks out of 60 - however, we have only indicated the main comments, arguments and conclusions. Many more details are possible.
The answer below should not be considered as a typical answer that a candidate can generate during the EQE itself:
- It has been made by 2-3 experienced D tutors
- This is not the order that everything was written down
- We have not considered possible alternative answers, which may also get a reasonable number of marks based on their "their individual merits"
- You will not need all of these comments to get a compensable fail or a pass
- Our answer is not complete - our aim is to give you the core of our answer so you can get a reasonable feeling as the how well you did. If we would try to be complete, you may easily draw a possibly incorrect conclusion as to passing or failing. It is the Exam Committees who decide about the marking tables and your score, not us. In particular:
- We do not know which exact arguments will attract marks and how many
- We do not know whether and where bonus points can be awarded and how many
- A reasoning and conclusion that relies on the content of old legal references will not get any marks where the current, amended versions are applicable.
D 2015 - DII part - “Printing Machines”
Timeline
(click on timeline for large view in new window)
Main issues:
- Entitlement to grant of EP-Z
- Missing paragraph in EP-X3 about +D
- T-X is based in IT, applications: EP-X1, EP-X2, EP-X3
- D-Z is based in DE, application: EP-Z
- I-G is mfg and selling only in IS, application: EP-G
- P-L is mainly active in Asian market, application PCT-L
Q.1 Current situation of M's
M+A
- Earliest filing = EP-Z, now withdrawn, cannot be revived. Will not provide protection in EPC states.
- EP-G: claim 1 not new in view of EP-Z as A.54(3) [EP-Z was published]
- EP-X1: not new in view of EP-Z and EP-G, both under Art.54(3) [EP-G was published]
- With no rights, all are free to exploit as long as M's do not include B, C or D
M+A+B
- Earliest filing: EP-G claim 2 – no prior art so novel/inventive, will grant
- EP-X2 claim 1: is not new in view of EP-G publication [Nov 13] as A.54(2) prior art.
- No M+A rights on which EP-G could be dependent
- So I-G may use EP-G to stop anyone including us, P-L and D-Z in any state with automatic validation or where they validate
- We cannot stop I-G
- Earliest filing: PCT-L - last moment to enter EP phase is 8/4/15. EP-G, EP-Z and EP-X1 are A.54(3) for Euro-PCT-L after entry, but do not disclose C. No other prior art, so novel/inventive. PCT-L will be granted in any state where they enter, including EP.
- EP-X2 - claim 2: Euro-PCT-L would destroy novelty as A.54(3).
- EP-X2 - claim 2: If PCT-L does not enter, publications EP-Z, EP-G and EP-X1 are A.54(2) but do not disclose C, reduction in misprints is basis for inventive step.
- No M+A rights on which EP-X2 and Euro-PCT-L could be dependent
- P-L can stop anyone from exploiting M+A+C in any state they enter (after grant), including EP (after grant & validation)
- If PCT-L does not enter EP: we can stop anyone (including P-L) from exploiting M+A+C, and we cannot be stopped
- Earliest filing: EP-X2 claim 3, new over A.54(3) Euro-PCT-L, new over A.54(2) publications EP-G & EP-X1, inventive based on surprising effect of less noise with B + C.
- So after grant & validate, we can stop anyone exploiting M+A+B+C
- but we can be stopped by anyone with a right to M+A+B or M+A+C (see above)
- So EP-X2 claim 3 right is dependent on Euro-PCT-L
- Earliest and only filing: appears to be EP-X3, but missing paragraph means that M+A+B+C+D is not enabled and cannot lead to a patent.
- So no rights for M+A+B+C+D
- We can stop anyone from exploiting with EP-X2 claim 3
- but we can be stopped by anyone with a right to M+A+B or M+A+C or M+A+B+C (see above)
- With so many dependent patents, cross-licences will be necessary to exploit
- Decision DE court is final, so until 15/4/15 to make use of A.61 possibilities. Not important that EP-Z is withdrawn.
- So file a new application under A.61 (EP-X4) for M+A. EP-X4 will have effective date of filing date EP-Z. We will have earliest filing date for M+A. No relevant prior art so M+A is novel. Inventive step based on improved speed. So EP-X4 will be granted. We will validate in important EPC states including IS - validation in DE is automatic. We will have the basic patent and be able to stop all exploitation in states validated states of all machine types
- File 3rd party observations for EP-G citing EP-Z as novelty destroying A.54(3). To be certain EP-G claim 1 is not granted.
- Alternative: file an opposition if granted using same grounds & evidence.
- EP-X3 cannot be granted - EPO will definitely notice when they start the search
- Alternative (1): File paragraph as missing part no later than 20/3/15. EP-X3 will then be redated to day paragraph filed. Demonstrations at trade fair will be A.54(2), but D not visible on exterior so no public disclosure of M+A+B+C+D. Redated EP-X3 patentable as no prior art disclosing D. Using less ink is basis for inventive step. After grant & validation, we can stop anyone exploiting M+A+B+C+D in EPC states, including P-L
- Alternative (2): file new EP application as soon as possible for M+A+B+C+D.
- Preferred alternative (3): file new PCT application (PCT-X) as soon as possible for M+A+B+C+D. With no prior art disclosing D, it will be granted in all states we enter, including EP and Asian states.
- I advise also to claim priority of EP-X2. So file no later than 10/3/15. We can then claim: 1) M+A+C; 2) M+A+B+C; and 3) M+A+B+C.
- Claim 1) is patentable for same reasons as EP-X2 claim 2, but it will be granted in all PCT states we enter where PCT-L does not enter
- Claim 2) is patentable for same reasons as EP-X2 claim 3, and it will be granted in all PCT states we enter
- So negotiate a cross-licence with both I-G and P-L: you want at least rights to manufacture & sell in IT.
- You are in strongest position with EP-X4 - you can stop all machine types. After publication, we should create provisional protection in relevant EPC states such as IS and DE.
- Enter all relevant Asian states with PCT-X as soon as possible for the deal with P-L.
- You can stop D-Z from exploiting M+A unless they pay a licence to you
- Demonstration at the trade fair may have infringed provisional protection of EP-G - I will check whether the national translations were filed
Pete, Roel, Jelle, 26/2/2015
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All rights reserved. No part of this answer may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents.
SHARE:
Dear Mr. Pollard,
ReplyDeleteOn the whole I agree with your proposal of answer, my only doubt concerns the possibility to file a new application under art. 61(b) EPC, because in the Paper was clearly indicated that a proceeding before the German Court was started but it was not explicitely indicated that the EPO was informed about the proceeding. Therefore I am not sure that the withdrawal of the patent application is not allowable. I think that if the EPO has not been informed about the starting of the proceeding the withdrawal of the patent application is allowable, even though I am not sure.
Best Regards
Francesco de Milato
In my opinion, EP-Z was withdrawn because the EPO was not informed about the proceedings before the German Court. However, I believe it is still possible to file a new application under art. 61(b). I would say that EP-Z is a non-prejudicial disclosure under art. 55 against EP-X2, but not against EP-G. However, it is not relevant for the patentability of EP-X2, since EP-G is prior art under art. 54(3). But, I am not sure if it was necessary to discuss the non-prejudicial disclosure.
Deleteoscar
I did not think about non-prejudicial disclosures: that could be argued for EP-X1 to exclude EP-Z, but it does not help you with EP-G as A.54(3). As you mention, it could also be used for EP-X2, but it does not help make the claims patentable.
DeleteThere are sometimes points for mentioning alternatives which do not work, but generally there will not be a lot of points for that.
If the EPO had been informed, they would have stayed - R.14(1). The client found out in Oct 13, instituted proceedings, and then found out in Dec 13 that it had been withdrawn.
ReplyDeleteBut I don't think it is a requirement that you must stay if it is possible - I cannot find any hint in the Guidelines. G3/92 simply indicated that it did not matter otherwise it would be unfair to the new applicant.
But if you discussed this in your answer, you will probably get some points for it.
Dear Mr. Pollard
DeleteThank you for your prompt and well-constructed response.
As pointed out by Tanja la Cour there is an issue to consider if the case has been withdrawn for a while (here more than a year) is that there may now have rights of continued use been established (e.g. by ICPR-G). This is up to national court. It can influence the licensing discussions.
DeleteThis issue is mentioned in:
G 3/92 r.4.4 In a case where the unlawful applicant's earlier application has been published, and is no longer pending at the time when a claim to the right to the grant of a European patent is made to a national court, the establishment of the lawful applicant's right to the grant may potentially prejudice third parties who have commenced commercial activities involving the subject-matter of the earlier application on the assumption that such subject- matter is in the public domain and cannot therefore be the subject of a European patent. In general, the longer the interval between the time when the earlier application ceases to be pending and the time when the lawful applicant's right is established by a national court, the greater the possibility of such third party prejudice.
The extent to which a national court, when deciding upon a claim under Article 1(1) Protocol in a case where the earlier application is no longer pending, should take into account any delay by the lawful applicant in commencing and prosecuting proceedings to establish his right and the possibility of consequent third party prejudice, is a matter to be considered by national courts.
In this situation only Art.61(b) is possible:
ReplyDeleteG 3/92 r.5.8 In the Enlarged Board's judgment, the proper interpretation of Art.61 is that, in cases where the earlier application (by the unlawful applicant) is no longer pending at the time when a final decision in favour of the entitlement of the person claiming to be the lawful applicant is issued by a national court, although clearly Art.61(1)(a) and (c) is obviously not applicable, nevertheless Art.61(1)(b) is applicable, and this allows the lawful applicant to file and prosecute a new application before the EPO in respect of his invention.
C-IX 2.2 In cases where the original application has been withdrawn, refused or deemed to be withdrawn and is thus no longer pending, Art. 61(1)(b) is applicable, thus allowing the third party to still file a new European patent application in respect of the same invention
Thank you for providing your answer so quickly.
ReplyDeleteCan you comment on how you believe the points will be split on the three questions? Usually it is something like 25, 10, 25 on exams like this.
It is impossible to say - it depends on the parts which were done well by most candidates, and how many got all the way through. They may give more points for question 1 if question 3 is done badly.
DeleteI have a similar solution, but I did not mention "alternative 1". To me the client is in the strongest position but still needs licenes from everyone else. Print-L and the client can cooperate by making sure that print-L does not enter EP phase or provides a license for it to the lcient while Print-L gets to sell the M+A+B+C+D in Asia by the client providing Print-L a license for his newly filed application (or priority filiung based thereof) in Asia. I think D was easier than in 2013. DI was also no problem, but it was sometimes not easy to assess how much of the "background" one should have said.
ReplyDeleteIt depends on what you think you need for the negotiation with Print-L. With the right to EP-Z, you can block them in Europe anyway. We are not sure whether more than one alternative should be mentioned, but we can see a couple of different ways of getting the client a good position.
DeleteYes, with DI it is sometimes difficult to decide what else they might want to see.
From your experience, do you still get some points in the first question if you are not too clear about who can stop whom but you correctly describe patents entitlements? I got a bit misled since the second question addressed FTO... Indeed, I discussed some of the infringements in the second questions, but I'm sure I've lost too many points...
ReplyDeleteIt doesn't matter where in your answer you discuss things - your answer is marked as a whole.
DeleteSuggesting that having a patent / patent application gives you a freedom to operate yourself rather than a right to stop/prevent others, is a major error that is usually fatal.
DeleteSee e.g. the comments in the Examiner's reports of DII 2013, where the Committee commented (with the answer to Q.3a+b):
"Most candidates recognised that Buona Cucina could use IT-PYR for preventing competitors from manufacturing pans with pyramidal protrusions in Italy. An alarming number of candidates incorrectly concluded that a granted IT-PYR will give Buona Cucina freedom to produce and sell pans with pyramidal protrusions. Such advice is incorrect and leads to substantial risk for the client. In the present case, any pan with pyramidal protrusions will fall under the scope of any claim directed to pans with 3D protrusions. Candidates should remember that a patent is not a positive right to operate."
And, as you can read in the "Tutor's Report on the EQE2014 papers" in epi Information 4/2014, the Committee may be considering to subtract marks if a candidate makes such a serious error, to which many tutors indicated that they would support so.
The Report says, a.o. "Every year there are overlapping patent rights (usually a “dependent” patent situation), and every year there are many candidates that advise the client that having a patent gives the right to produce/sell. This is fundamentally wrong, and is dangerous advice for your client."
And in the Tutor meeting after the EQE of 2013, reported in epi Information 4/2013, it was reported:
Delete• EC: Many candidates still write down that having a patent gives the right to produce - this indicates that they are not really “fit to practice”.
• TS: This is a fundamental principal of patent law – it should be done correctly.
and
• TS: The Examiners’ Report states: “An alarming number of candidates incorrectly concluded that a granted IT-PYR will give BC a positive right” – are any points subtracted for this?
• EC: Many candidates still write down that having a patent gives the right to produce. This indicates that they are not really “fit to practice”, but the D Paper does not have any negative points. They can therefore still pass by gaining points elsewhere.
• TS: This is worrying. Perhaps negative points should be introduced for such comments. How can such candidates advise a real client correctly if they think this.
• EC: The marking on D is positive – you start with 0 points and get points for everything you do correct. But if you write something like this, your answer is reviewed very critically.
There was some discussion on this. The EC would like to give negative marks, but that does not currently fit into the marking system. However, there is nothing in the rules to stop them doing this. So firstly make sure you do not think this, and secondly make sure you do not write it under the stress of the exam.
I did not write that, but I could have been clearer considering that the letter was for a client... I said something like "G is entitled to patent protection for M+A+B, so M+A+B+C+D will infringe their patent if granted. However, since X will eventually be granted a patent for M+A, G will infringe this patent with M+A+B. A cross license...". And the same for M+A+C, etc. So I got the concepts right (the examiner will see I differenciate between patent protection and FTO), but perhaps I could have been more precise in stating the FTO for all the embodiments... That is why I asked if I would still get some points for the first question.
DeleteJuan.
I expect you will, but it depends on the rest of your answer too - if there is contradicting or conflicting information as to who can do what and who can stop who, and why, the situation may be very different than if it is all consistent and correct but not complete.
DeleteIf you are explicit in what to cross-license and why, I expect that your answer could even attract full marks.
Most importantly: you need to clarify to your client what the effects of the patent portfolios are in each others business, and how&why you can overcome the negative effects on your clients business using e.g. (cross-)licensing.
Thanks a lot for your answer. I think I have forgotten to explicitly describe the situation of some embodiments (perhaps A+B+C+D, where I only said X is entitled to patent protection and forgot to deepen on later) but for most of them I think that the licenses are clarifying (G needs a license for M+A and M+A+B since X has patent for M+A, X needs a license for M+A+B+C+D since G will have a patent for M+A+B and L a patent for M+A+C if they enter into EP phase, etc).
DeleteJuan
Could anyone explain to me how the information that "B+C" provides a surprising effect had to be used?
ReplyDeletePCT-L is 54(3) prior art for EP-X2 and thus cannot be used for inventive step. EP-G is the closest 54(2) prior art and discloses M+A+B. Since C is not disclosed in any 54(2) document and solves on its own a technical problem (reducing the number of misprints) then M+A+B+C of EP-X2 involves an inventive step. Why the need to refer to B+C having a suprising effect?
To be inventive, the claimed subject-matter must solve a technical problem. There is always relevant prior art. Trivially being novel is not enough. In general you should for a novel claim indicate an effect (very short way of arguing inventive step if there is no other relevant prior art under Art.54(2)
DeleteSure! But C on its own does solve a technical problem: as explicitly mentioned in the subject, C reduces the number of misprints. So, in my copy, I wrote that M+A+B+C involves an inventive step over M+A+B because C solves this technical problem. I cannot understand why there is a need to say additionally that B+C solves the surprising effect of reducing noise.
DeleteThis year as well as last year, the new and inventive features were just indicated by enumerating them ("feature A", "feature B", "feature C", "a feature D"; last year: compounds A, B, C and D), rather then using a descriptive term with a physical meaning (2013: 3D, pyramidal, hemispherical and cubic protrusions; 2012: nozzles, bundle B of hollow fibres, polymer P, ceramic C, stainless steel, coating K; 2011: pentagonal, cross-shape, triangular cross-sections, additives such as antioxidant, detergent, corrosion inhibitor, or viscosity index improver (DE-Ax); additives such as a viscosity index improver, an emulsifier or an anti-foaming agent (JPU-PAN2)).
ReplyDeleteA reason could be that you do not have any incentive to consider whether the feature or feature combinations can work and has the alleged advantages.
Did you consider this an advantage?
I think that using letters for features makes it easier and faster to write things down, which saves time. We are not interested in the machine itself, only how inventions&applications are dependent on each other.
DeleteWhy do you not mention the evident abuse according article 55a) EPC
ReplyDeleteOn page 1 there is the Information that the filing date of EP-X1 is in July 2012 and
the filing date of EP-Z is in March 2012
Is therefore EP-Z state of art ?
To improve X's position againts G, I proposed making an opposition against EP-G (M+A) based on EP-Z. Then we'll get rid of EP-G (M+A), and the EP-Z will be Art55(a) document for EP-X1. Based on this, company X will have a granted patent for M+A, due to which company X can deny other companies to use machines having M+A.
DeleteHowever, I missed the decision (for Q1), where X could still apply a patent for M+A based on A61. I noticed that A61 could be applied here, but because X didn't inform EPO on the court proceedings and EP-Z was withdrawn, i discussed that company X was too late.
Fingers crossed for all of us!
Which act by G would you consider to be evident abuse with the intend to harm X (EP-X1's applicant)?
DeleteAnonymous (please use a (nick) name) asked: "Is therefore EP-Z state of art ?"
DeleteNot for the reason you mentioned as such - only because EP-Z was in fact published, it became an Art.54(3) prior art against EP-X1.
That EP-Z was published can be concluded from:
- EP-Z being mentioned in the search report of EP-X1 - see par.[003];
- EP-Z was open for file inspection - see par.[005];
- 3/12 + 18m -> 9/13 < withdrawal in 11/13
I think the violation of the confidentiality agreement and the filing and the publication
Deleteof EP-Z is an evident abuse under Article 55 EPC
(see also solution paper D2013).
Therefore to improve X´s position we can state that EP - Z is no
54(3) EPC document.
Bernd
Hi Bernd,
DeletePlease clarify which confidentiality agreement your refer to. I can then respond adequately.
best regards, Roel
Dear Roel,
Deletein paragraph [002] on page 1 in paper D 2015 is written:
"In february 2012 we presented, under a confidentiality agreement, a
prototyp of our machine A+B to German Company Druck - Z, with whom we cooperate"
In my opinion Druck - Z violate this confidentiality agreement.
Sincerely,
Bernd
Thx Bernd for the clarification.
DeleteIn my view, that confidentiality agreement is the basis for the successful entitlement proceedings of [003], last sentence and [006] - Art.61.
For Art.55, breaching the confidentiality agreement as such is not enough - there needs to be an intent to harm TIPOGRAF-X from DRUCK-Z.
I donot see a hint / fact from which this intent shows. This was different in D 2013 [011]: ". Both letters stated that Dr Serrano was planning to file patent applications for their contents. Dr Serrano also read out the letter of reply from Schnell-Koch of May 2010, in which they expressed their lack of interest in these proposals."
Further, in D 2013, Art.55 was the only possible way to get explicit protection for the stolen subject-matter - here, the situation is also different in that respect, as we cooperate with DRUCK-Z.
So, I donot think an Art.55 discussion was expected - whether such discussion attracts marks or not, I donot know: with good argumentation probably a few, without a good argumentation and/or if you simplified the rest of the paper too much by this, probably none - and you may have missed the expected discussion and associated marks if you focussed on Art. 55.
Thank you very much for your answer.
DeleteBernd
Roel,
ReplyDelete"So, I donot think an Art.55 discussion was expected". I very much disagree with this assessment. Art. 55 requires "actual intent to harm or actual knowledge that harm would or could be expected." T585/92 r.6. T173/83 r.6 goes even further, whcih holds that "abuse" does not require intent to harm; a disclosure due to negligence or mistake is regarded as abuse.
Of course, discussing Arts. 55 and 61 are not mutually exclusive. Points should be awarded for analyzing both options.
Further, Art. 55 does not simplify the paper. It only removes EP-Z from the prior vis-a-vis EP-X1. TIPO-X still needs to use Art. 61 to get around/invalidate EP-G.